Invesco Ltd. v. Eugene Nowee
Claim Number: FA1112001418904
Complainant is Invesco Ltd. (“Complainant”), represented by Theresa Conduah of Alston & Bird LLP, North Carolina, USA. Respondent is Eugene Nowee (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <invesco-perpetualfunds.com>, registered with 1 & 1 Internet AG.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 6, 2011; the National Arbitration Forum received payment on December 12, 2011.
On December 9, 2011, 1 & 1 INTERNET AG confirmed by e-mail to the National Arbitration Forum that the <invesco-perpetualfunds.com> domain name is registered with 1 & 1 Internet AG and that Respondent is the current registrant of the name. 1 & 1 Internet AG has verified that Respondent is bound by the 1 & 1 Internet AG registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@invesco-perpetualfunds.com. Also on December 13, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is the owner of the INVESCO PERPETUAL mark, which is used in connection with the marketing of a wide range of investment strategies and management services.
Complainant has registered the INVESCO PERPETUAL trademark (Reg. No. 5,037,288, registered November 4, 2007) with the European Union’s Office of Harmonization for the Internal Market (“OHIM”).
Respondent registered the <invesco-perpetualfunds.com> domain name on April 12, 2011.
The domain name resolves to an inactive website that only displays the statement, “This domain has just been registered for one of our customers! Domain registration and webhosting at best prices.”
Respondent uses the disputed domain name to distribute unsolicited e-mails that fraudulently purport to offer investment services from Complainant.
Respondent’s <invesco-perpetualfunds.com> domain name is confusingly similar to Complainant’s INVESCO PERPETUAL mark.
Respondent is not commonly known by the disputed domain name.
Respondent’s use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent does not have any rights to or legitimate interests in the <invesco-perpetualfunds.com> domain name.
Respondent registered and uses the <invesco-perpetualfunds.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in the INVESCO PERPETUAL trademark under Policy ¶ 4(a)(i) by reason of its registration of the mark with an international trademark authority, the OHIM. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that a complainant had established rights to the MILLER TIME mark through its trademark registration); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in its mark in some jurisdiction).
Respondent’s <invesco-perpetualfunds.com> domain name is confusingly similar to the INVESCO PERPETUAL trademark. In forming the disputed domain name, Respondent has merely added to Complainant’s mark the generic term “funds,” which is descriptive of Complainant’s business conducted under the INVESCO PERPETUAL mark. This addition does not make the disputed domain name distinctive from the mark. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating a complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to that complainant’s mark); see also Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to the mark of another does not distinguish the resulting domain name from the mark under Policy ¶ 4(a)(i)).
Respondent also adds a hyphen and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in creating the <invesco-perpetualfunds.com> domain name. These changes are irrelevant to a Policy ¶ 4(a)(i) analysis. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Dollar Fin. Group, Inc. v. Advanced Legal Sys., Inc., FA 95102 (Nat. Arb. Forum Aug. 14, 2000) (finding the domain name <loan-mart.com> confusingly similar to a complainant’s LOAN MART mark).
The Panel thus finds that Respondent’s <invesco-perpetualfunds.com> domain name is confusingly similar to Complainant’s INVESCO PERPETUAL trademark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights to or legitimate interests in the disputed <invesco-perpetualfunds.com> domain name. Once a complainant has made out a prima facie case in support of this allegation, the burden of disproving it shifts to a respondent. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by a complainant under Policy ¶ 4(a)(ii), the burden shifts to a respondent to demonstrate its rights to or legitimate interests in a disputed domain name); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:
complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.
Complainant has made out the requisite prima facie showing under this head of the Policy. Therefore, and because Respondent has not submitted a response to the Complaint filed in this proceeding, we may presume that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the evidence of record, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by observing that Complainant asserts, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name. We also note that there is no evidence in the record indicating that Respondent has been authorized by Complainant to use its INVESCO PERPETUAL trademark in a domain name. Moreover, the WHOIS record for the disputed domain name identifies the registrant only as “Eugene Nowee,” which does not resemble the contested domain name. On this record we must conclude that Respondent is not commonly known by the disputed domain name so as to have rights to or legitimate interests in the domain under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name, and so had no rights to or legitimate interests in the domain within the meaning of Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent’s lack of rights and legitimate interests is evidenced by the use of the disputed domain name to deliver to Internet users e-mail messages that fraudulently purport to offer investment services from Complainant. In the circumstances here presented, we may comfortably presume that Respondent profits from this behavior. This is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007):
Because respondent in this case is also attempting to pass itself off as complainant, presumably for financial gain, the Panel finds the respondent is not using the … domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
See also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that a respondent’s attempt to pass itself off online as a complainant, in an unauthorized use of that complainant’s mark, stands as evidence that that respondent had no rights to or legitimate interests in a disputed domain name under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii)).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s use of the disputed domain name in the manner described above is evidence that Respondent has registered and uses the domain in bad faith within the contemplation of Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv), where the domain name in question was obviously connected with a complainant’s mark, thus creating a likelihood of confusion among Internet users for a respondent’s commercial gain).
In addition, Respondent’s use of the disputed domain name to attempt to pass itself off as Complainant by distributing e-mails purporting to be from Complainant demonstrates Respondent’s bad faith registration and use as provided in Policy ¶ 4(a)(iii). See, for example, Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that a respondent's use of <monsantos.com> to misrepresent itself as being a complainant and to provide misleading information to Internet users supported a finding of bad faith under Policy ¶ 4(a)(iii)); see also Am. Int’l Grp., Inc. v. AIG, FA 1060803 (Nat. Arb. Forum Sept. 21, 2007) (finding that bad faith is demonstrated under Policy ¶ 4(a)(iii) when a disputed domain name is used to send unsolicited e-mails to Internet users).
For these reasons, the Panel finds that Complainant has satisfied its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <invesco-perpetualfunds.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 25, 2012
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